The Fearless Girl Goes to Court: When an Icon Becomes a Trade Mark

The Fearless Girl Goes to Court: When an Icon Becomes a Trade Mark

In 2017, a bronze statue of a small girl standing defiantly facing the Wall Street Charging Bull became one of the most photographed images in the world. Commissioned by State Street Global Advisors (SSGA) and installed on International Women's Day, the "Fearless Girl" became an instant cultural symbol — of gender diversity, corporate accountability, and the push for women's representation in leadership. But behind the cultural resonance was a commercial strategy, a registered trade mark, and, eventually, a Federal Court dispute in Australia.

State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd (No 2) [2021] FCA 137 raises questions that go to the heart of contemporary trade mark law: Can an image associated with a social movement function as a badge of commercial origin? And if so, does a law firm that adopts a similar image for a campaign with similar social themes infringe those trade mark rights?

Background: An Icon, an ETF, and a Law Firm

State Street Global Advisors is the investment management arm of State Street Corporation — one of the world's largest asset managers. SSGA commissioned and owns the Fearless Girl statue, and it did so with commercial intent: the statue was designed to promote SSGA's SHE ETF, an exchange-traded fund that invests in companies with gender-diverse leadership. SSGA registered trade marks in Australia in relation to the Fearless Girl image, and used her as a central element of its brand for gender-diversity investment products.

Maurice Blackburn Pty Ltd is a prominent Australian plaintiff law firm well known for social justice causes — class actions, employment law, and access to justice work. The firm adopted an advertising campaign featuring an image of a young girl that was, in the view of SSGA, highly similar to the Fearless Girl. Maurice Blackburn used this imagery in connection with its own promotion of workplace and employment law services — ground adjacent to SSGA's gender-diversity messaging.

SSGA alleged trade mark infringement and misleading conduct under the Australian Consumer Law. Maurice Blackburn disputed that its use infringed SSGA's rights, raising questions about whether its use was "use as a trade mark" and whether consumers would be confused about any commercial connection between an asset manager and a plaintiff law firm.

Key Legal Issues

Can a Cultural Image Function as a Trade Mark?

A trade mark must function as a badge of origin — a sign that identifies the commercial source of goods or services. The more culturally resonant an image becomes, the more it might be argued that it has moved beyond commerce and into the public domain of shared symbols. The Fearless Girl presented this tension acutely: the image had become genuinely iconic in a cultural sense, appearing in news media, commentary, and public discourse that had nothing to do with SSGA or its products.

Despite this cultural saturation, SSGA maintained registered trade marks in the image, and Australian trade mark law does not strip registered rights from marks that become culturally familiar. The question is whether the specific use alleged — in the context of a competitor's commercial campaign — crosses the line into trade mark infringement.

Use as a Trade Mark: Badge of Origin vs Thematic Use

Section 120(1) of the Trade Marks Act 1995 (Cth) requires that the defendant have used a sign "as a trade mark" — that is, in a way that functions as a badge of origin, indicating the commercial source of goods or services. Not every use of a similar image is trade mark use. A purely decorative use, or a use that communicates a social or political message rather than a commercial identity, may not cross that threshold.

Maurice Blackburn's position was, in substance, that its use of a young girl image was thematic — associated with the social justice and women's empowerment themes of its practice areas — rather than being used to indicate that its services originated from, or were associated with, SSGA. The case required the Court to assess what message consumers would actually take from the use of the image in the context of a law firm's advertising.

Deceptive Similarity and Consumer Confusion

Even if the use was accepted as trade mark use, SSGA needed to establish that Maurice Blackburn's image was substantially identical with or deceptively similar to SSGA's registered marks. The images were not identical — the question was whether they were sufficiently similar that a consumer with imperfect recollection of SSGA's Fearless Girl would be likely to be deceived or confused by Maurice Blackburn's image.

The commercial context added a further dimension: would a consumer genuinely believe that a law firm's advertising campaign was connected to or endorsed by a major asset manager? The gulf between the two businesses' services might itself reduce the likelihood of confusion.

ACL Misleading Conduct

The ACL claim asked whether Maurice Blackburn's campaign was likely to mislead consumers into believing there was a commercial relationship between the two organisations. This is a broader inquiry than trade mark infringement — it focuses on the overall conduct and its effect on reasonable consumers, rather than on whether a specific registered mark was used.

Strategic Takeaways

• Iconic images can be registered and enforced as trade marks. The cultural significance of an image does not prevent it from functioning as a trade mark, and does not limit the registered owner's ability to enforce their rights.

• Register distinctive visual elements early. If your brand centres on a distinctive image, photograph, illustration, or visual motif, register it as a trade mark in the classes relevant to your business. Registration creates a presumption of validity and makes enforcement significantly more straightforward.

• Not all uses of similar imagery are infringing. The "use as a trade mark" requirement means that purely decorative or thematic uses may not cross the infringement threshold. But the line is context-dependent and not always obvious — take legal advice before adopting an image that resembles a competitor's registered mark.

• Social or cause-based campaigns carry IP risk. Businesses and organisations that use imagery associated with social movements or shared cultural symbols for commercial purposes — even where the intent is broadly positive — should conduct trade mark clearance before doing so.

• ACL and trade mark claims are complementary. An image that might not quite cross the line for trade mark infringement could still support a misleading conduct claim if consumers are likely to form an incorrect impression about the commercial relationship between two organisations.

Conclusion

State Street v Maurice Blackburn sits at an unusual intersection: financial services, social justice advocacy, and IP law. It demonstrates that trade mark protection follows function, not cultural status. When an image serves as a commercial identifier — pointing consumers to a specific business and its products — it is protectable, and that protection is enforceable even against organisations whose use of a similar image was motivated by values rather than commercial mimicry.

For any business or organisation using powerful imagery in its brand or campaigns, understanding the trade mark implications of that imagery is an important part of brand strategy.

Contact Stellar IP Law if you have questions about protecting distinctive images or visual branding under Australian trade mark law.